Cite as: 8 TECH. L. REV., June 2011, at 215.
Notes and Comments
The Partial Design and Derivative
Design Patent Practices under the
R.O.C. (Taiwan) Patent Reform Act
*Michael Sun
**Abstract
The two most important changes to design patenting to be introduced by the Patent Reform Act are that partial designs can be protected and that protection by “associated design patent” is replaced by “derivative design patent”. According to Article 123 of the Act, a design patent application can focus on partial design by using solid lines to indicate the claimed portion and using dash/broken lines to in-dicate the unclaimed portion. The introduction of partial design avoids unnecessary limitations to the scope of the claimed design. According to Article 129 of the Act, for two or more similar designs owned by the same person, a design patent tion can be filed to cover one of the designs and derivative design patent applica-tion(s) can be filed to cover the rest. Unlike an associated design patent, which
*
This article expresses exclusively the author’s personal opinion.
**
Senior Patent Attorney, Lee and Li Attorney at Law; Juris Doctor, Franklin Pierce Law Center (now University of New Hampshire School of Law).
投稿日：2010 年 11 月 16 日；採用日：2011 年 3 月 10 日
depends from its original patent, a derivative design patent is independent from its original design patent. That is, a derivative design patent can be independently en-forced.
Keywords: Partial Design, Derivative Design Patent, Associated
De-sign Patent, Patent Reform Act
科技法學評論，8 卷 1 期，頁 215（2011）
專利法修正草案對
我國設計專利實務的影響
孫寶成
**摘 要
專利法修正草案對我國設計專利實務兩項最大的影響在於部分設計成為 設計專利之保護標的以及衍生設計專利取代現行聯合新式樣專利。依據專利 法草案第 123 條之規定，申請人可以透過實線表示主張權利之部分並透過虛 線表示不主張權利的部分，以針對物品的局部請求設計專利保護。部分設計 專利引進專利法修正草案後，解決了現行專利法中要求必須針對完整物品請 求設計專利保護，因而不必要地限縮權利範圍的問題。依據專利法草案第 129 條之規定，同一人有二個以上近似之設計，得申請設計專利及其衍生設 計專利。衍生設計專利與獨立於其原設計專利，與聯合新式樣專利依附於其 原設計專利不同。換言之，衍生設計專利權人可獨立行使其專利權。關鍵詞：部分設計、衍生設計專利、聯合新式樣專利、專利法修正
草案
**理律法律事務所資深專利師；美國 Franklin Pierce Law Center 法學博士（現美國新罕 布夏大學法學院）。
1. INTRODUCTION
R.O.C. (Taiwan) became a member of the World Trade Organization (WTO) in 2002. The current patent law1 was enacted in the same year in light of the WTO’s Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement. To address the needs of the local design industry and the Intellectual Property Court (established 2008), the Intellectual Property Office (IPO) has held numerous public hearings in recent years culminating in a draft Patent Reform Act,2 which has been reviewed by the Ministry of Economic Affairs (MOEA) and Executive Yuan. The Act will take effect upon passage by the Legislative Yuan and promulga-tion by the President.
The main changes to design patenting are that: (i) the Chinese name of “de-sign patent” is changed from “新式樣專利” (new de“de-sign patent) to “設計專利” (design patent) to keep consistency with corresponding names in the patent laws of other countries/jurisdictions; (ii) icons and graphical user interfaces (GUI) become patentable subject matter; (iii) a set of designs that has commonality of design or is generally of the same character can be protected by a single design patent applica-tion; (iv) partial designs are protected; and (v) protection by “associated design patent” is replaced by “derivative design patent（衍生設計專利）”.3 This article focuses on the fourth and fifth changes. In particular, comparisons are made be-tween the current complete-article design practice and the partial design practice in
1
The current Patent Law has been in effect since July 1, 2003 [hereinafter Patent Law].
2
The version sent to the Legislative Yuan for examination, see Articles of Draft Amendment
of the Patent Act, TAIWAN INTELLECTUAL PROPERTY OFFICE, http://www.tipo.gov.tw/ch/Al- lInOne_Show.aspx?path=2769&guid=45f2e9ed-6a50-488e-8514-47a78e3cc320&lang=zh-tw (last updated Nov. 10, 2010) [hereinafter the Act].
3
沈洳瑩，「我國專利法修正中設計專利與設計產業現況之調和」，科技法律透析， 第 21 卷第 8 期，頁 27-30（2009）。
the Act in view of U.S. practice under Zahn.4 Also compared are the current asso-ciated design patent in the Patent Law and the derivative design patent in the Act.
Current practice does not allow an applicant to use phantom/broken lines to unclaim the portions that he/she does not intend to claim, and this may unnecessar-ily limit the scope of a design. For example, a designer designs a fashionable bottle in which the design at the bottom potion is the point of novelty while the rest is conventional, and latter obtains a design patent in Taiwan, the claim of the design patent has to cover the whole bottle. If a potential infringer creates a product which appropriates only the novel design of the bottle’s bottom section and intentionally changes the design of the middle and upper portions of the bottle shown in the de-sign patent, he/she may not be infringing the dede-sign patent if the overall visual ef-fect of the claimed design and the accused bottle, including the bottom, middle and upper portions thereof, are different such that an ordinary observer would not con-sider them to be similar. However, if it were allowable to claim only the design embodied in the bottom of the bottle, as under the Act, the result will be totally dif-ferent.
Under current practice, a single design patent application is not allowed to in-clude multiple embodiments (designs similar to each other); similar designs have to be included in associated design patent applications. However, an associated design patent is dependent from its parent and does not have its own patent scope. There-fore, although a patent owner may have a parent design patent and several associ-ated design patents, he/she only has one patent scope and has to annually maintain a plurality of patents. The advantage of owning associated design patents, as dis-cussed in section IV of this article, is very limited. The derivative design patent system in the Act aims to solve this problem.
4
2. PARTIAL DESIGN
2.1 Current Practice of Partial Design Drawings in
Taiwan
Under US practice, phantom/broken lines are frequently used to highlight par-tial feature(s) of a design or to show environments of a claimed design, while the design itself is presented in solid lines (see M.P.E.P. § 1503.02). In contrast, since partial designs are not currently allowable in Taiwan, Page 3-1-6 of the Patent Ex-amination Guidelines (hereinafter referred to as the “Guidelines”) stipulates that the subject matter sought to be patented in a new design patent (hereinafter referred to as the “design patent”) application should be shown in solid lines. Phan-tom/broken lines should be removed or replaced with solid lines. Examiners often object to even phantom/broken lines showing only detachable environmental parts of a claimed design.
Removal of phantom/broken lines representing non-detachable parts of an ar-ticle would render the arar-ticle that embodies such a claimed design incomplete, and so an applicant’s only option is to replace them with solid lines. However, since solid lines represent parts of the features of a claimed design, replacing phan-tom/broken lines with solids lines adds features to the claimed design, thus narrow-ing its scope.
The following two examples of detachable and non-detachable components demonstrate the difference between original disclosure as filed in the United States and current acceptable disclosure in Taiwan.
Example 1: Cap of a Pen with Detachable Barrel (see below Figure 1) Original Disclosure as filed in USA Acceptable Disclosure 1 Currently in Taiwan Acceptable Disclosure 2 in Taiwan
The above left drawing includes phantom/broken lines to represent an environmental part (barrel) of the claimed cap. When filing currently in Taiwan, the drawings for design pat-ent application should be amended by removing the phantom lines (see the above right drawing) or replacement with solid lines (see the above middle drawing).
Example 2: Toothbrush with Non-Detachable Handle (see below Figure 2)
Original Disclosure as filed in USA Acceptable Disclosure Currently in Taiwan
Under Taiwan’s current practice, a non-detachable article is not eligible for design patent protection. Therefore, the phantom lines in the drawings must be replaced with solid lines to demonstrate the entire article rather than a partial component.
2.2 The U.S. Design Practice under Zahn
The two leading sources regarding the use of broken lines for design drawings are the Manual of Patent Examining Procedure (M.P.E.P.) § 1503.02 and In re
Zahn. In Zahn, instead of claiming the whole drill, the patent applicant used solid
unclaimed twist-drill portion in the application (see below Figure 3). The title of the design application as originally filed is “for the Shank of a Drill Bit” and in the specification, its claim is described as “the ornamental design for a Shank of a Drill Bit as shown and described”.
U.S. Des. Pat. No. 257,511
Figure 3
The description in the specification reads: “The phantom representation of the cutting portion of the drill is made in the drawings merely for the purpose of illus-trating the type of cutting portion that may be formed integral with the shank por-tion to form the drill bit”. The examiner of the United State Patent and Trademark Office (USPTO) in the first office action rejected the application on the ground that the scope of the claim is indefinite and violates Paragraph 2, § 112 of the Patent Law5 because the portion in the application covered by solid lines is not directed to a complete article of manufacture. In response to the first office action, the ap-plicant without changing his drawings amended the description to read: “the
5
The specification shall conclude with one or more claims particularly pointing out and dis-tinctly claiming the subject matter which the applicant regards as his invention.
tom representation of the cutting portion of the drill bit is made in the drawings merely for the purpose of illustrating the environment in which the shank of this invention is used. The structure shown in broken lines is not part of the design sought to be patented” and cited M.P.E.P. § 1503.02 expressly permitting the use of broken lines to show environmental structure.6 The examiner seeming to under-stand the scope of the claim after the applicant’s amendments of the description and explanations in the response dropped the indefiniteness rejection and in the second office action made a new subject matter rejection under 35 U.S.C. 171.7 The examiner reasoned that the claim is not directed to a discrete article of manu-facture. Twist drills are one article of manufacture having shank portions, which are not separate elements, separately protectable as articles of manufacture and thus the subject matter of the claim violates 35 U.S.C. 171. Responding to the second office action, still without changing the drawings, the applicant amended the title to read “drill tool” (a complete article) and made corresponding amendments in the descriptions to meet the discrete article of manufacture requirement. However, even though the title and the descriptions were amended, since the drawings, which determine the scope of the claim, were not amended, the claim of the subject appli-cation still did not direct to a discrete article of manufacture, the appliappli-cation was finally rejected under 35 U.S.C. 171.
Unsatisfied with the rejection decision, the applicant appealed to the Board of Patent Appeals and Interference (BPAI). The BPAI not only affirmed the exam-iner’s § 171 rejection but also added a § 112 rejection. The BPAI stated its reasons for sustaining the rejection decision: “[I]n view of our conclusion that only the shank portion, rather than the entire tool, is being claimed, we feel constrained by
6
In re Zahn, 617 F.2d at 262.
7
Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor subject to the conditions and requirements of this title.
Blum8 to hold that a design patent cannot properly be granted for the ornamental design of a portion only of an article of manufacture.”9 With respect to the newly added § 112 rejection, the BPAI reasoned that it is unclear what the scope of the claim is in light of the inconsistency between the subject matter claimed in the drawings (a portion of the drill) and the title (a complete drill).
The case was appealed to the Court of Customs and Patent Appeals (C.C.P.A.). Ultimately, the C.C.P.A. court (now replaced by the Court of Appeals for the Federal Circuit (C.A.F.C.)) held that partial design is acceptable for patent design applications. With respect to the BPAI’s § 112 rejection, the court noticed the examiner’s drop of the § 112 rejection during the prosecution of the application and that in the BPAI’s written opinions, the BPAI clearly states and understands that only the shank portion, rather than the entire tool, is claimed and thus reversed the BPAI’s § 112 rejection. Under U.S. practice, the scope of a design patent is de-termined based on the drawings but not the title and the BPAI seems to have con-fused the two. With respect to the BPAI’s § 171 rejection, the court found that the BPAI incorrectly relied on Blum. In Blum, solid lines were use to illustrate the do-minant features of the claimed design, “the handrail” of the handrail unit while broken lines were used to illustrate the relatively unimportant portions of the de-sign, i.e., “the handrail support” of the handrail unit, and such use of broken lines rendered the scope of the claim indefinite because there are no portions of a claimed design which are unimportant. In contrast, the broken lines in Zahn were used to show the portions unclaimed but not portions relatively unimportant. The courts have searched Blum in vain, however, for any statement justifying the BPAI’s statement that an ornamental design cannot be incorporated or embodied
8
In re Blum, 374 F.2d 904 (C.C.P.A.1967).
9
into something less than an entire article of manufacture.10
The court noted that the word “therefor” of § 171 in the phase, “may obtain a patent therefor” refers back to “design”, not to “article of manufacture”.11 There-fore, a design patent is to protect a design that is embodied in an article but not the article itself. 35 U.S.C. 171 authorizes patents on ornamental designs for articles of manufacture. While the design must be embodied in some article, the statute is not limited to designs for complete articles, or “discrete” articles.12 The court rea-soned that “the design is embodied in the shank portion of a drill and a drill is un-questionably an article of manufacture.” In Zahn, the USPTO and the Board looked to the M.P.E.P. for guidance on partial design. The pertinent parts in the M.P.E.P. were considered to lack clarity by the C.C.P.A. court and thus were amended. The C.C.P.A. court’s holding reflects this updated M.P.E.P. revision.
In general, M.P.E.P. Chapter 1,500 governs design patent procedures in the U.S. A design patent application by definition includes “subject matter which is claimed as the design embodied in or applied to an article of manufacture and not the article itself” (see M.P.E.P. § 1502). Under the amended M.P.E.P. § 1503.02, broken lines are most commonly used to disclose the environment and define the bounds of the claim. Such illustration of environment by broken and phantom lines can be used to show structures that are not part of the claim. Additionally, boundary lines illustrated by straight broken lines can be used to define the bounds of a claimed design when the boundary does not exist in reality. However, in view of
Blum, broken and phantom lines cannot be used to indicate the relative
unimpor-tance of portions of the design, such as hidden planes or surfaces. To avoid confu-sion, a design patent application should indicate the purpose of broken lines in 10 Id. at 268. 11 Id. 12 Id.
tion to the scope of the claim.
2.3 Partial Design under the Act and Its Influence
2.3.1 Partial Design Practice under the Act
According to § 123 of the Act, a design patent application can focus on either an entire or partial design. The legislative reason13 for adopting partial design in the Act is as follows: “Under present patent law, a patented design should be con-figurations, patterns and colors or combinations thereof of a ‘complete’ article (in-cluding components and parts). In other words, if the patented design contains mul-tiple points of novelty while a counterfeit only copies some of them, such counter-feit does not fall in the scope of the design patent. To encourage creative design in conventional industries on the one hand while strengthening design patents to meet the needs of developing designs in mature domestic industries, and in view of § 2 of the Japanese Design Act, § 2 of the Korean Design Act, and § 3 of the European Design Act, ‘partial design’ is added to Paragraph 1, § 123 of the amended patent law as a patentable design.” Although, the Enforcement Rules of the Patent Law (the Rules) has not been amended to correspond to the partial design practice in the Act, it is believed that under the new practice, solid lines will be used to illustrated claimed portions of an article and phantom/broken lines will be used to the un-claimed portions of the article just like practice in the U.S., Japanese and European. The term “partial design” in the Act may not be the most appropriate term to truly reflect what is intended and may cause some confusion. In view of similar U.S. practice, the design in Zahn was a design that embodied in a portion of an article of manufacture but the design by itself was not a part of another design.
13
2.3.2 The Influence of the Partial Design Practice
2.3.2.1 Influence During the Prosecution StageUnder current § 33 of current Rules, drawings of a design shall be presented in a perspective view and six views (i.e. the front, rear, left side, right side, top and bottom), or in two or more perspective views. However, since partial design forces on the design of a particular portion of an article, some views of the article would not contain the claimed portion, and it would be unnecessary to show such view(s). Therefore, the Taiwan Intellectual Property Office may need to consider amending the current requirement. In contrast, U.S. practice only requires that the drawings or photographs should contain “a sufficient number of views” to disclose the com-plete appearance of the design claimed (see 37 C.F.R. 1.152). Taking the drill in
Zahn as an example, the claimed shank portion cannot not be seen from the bottom
view and thus in the granted U.S. Des. Pat. No. 257,511 does not contain such bot-tom view.
2.3.2.2 Influence During the Enforcement Stage
In contrast to the holding of the U.S. case Egyptian Goddess14 that the single ordinary observer test including prior art analysis should apply, Chapter II (for de-sign patents) of the Patent Infringement Assessment Guidelines15 (hereinafter re-ferred to as the Assessment Guidelines) adopts a procedure similar to the two-prong test in the US case Litton System16 for assessing infringement on a design patent. The two-prong test includes both the “ordinary observer test” and “point of novelty test.” The ordinary observer test is to determine whether the resemblance
14
Egyptian Goddess v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008).
15
The Patent Infringement Assessment Guidelines was issued by the Taiwan Intellectual Property Office in 2004 for the reference by all levels of courts in conducting a patent in-fringement analysis.
16
between the “accused product” and the “claimed design” is such as to deceive an ordinary observer, given such attention as a purchaser usually gives, inducing him to purchase the accused product in the belief that it is the product covered by the claimed design.17 The point of novelty test is applied to determine whether the accused product appropriates the point of novelty of the claimed design. Point of novelty refers to the features that can distinguish the claimed design from the prior art in regard to novelty or inventive step.18 The Assessment Guidelines do not mention whether the design of the an accused product in pertinent part has to be identical to the point of novelty of the design patent in order to be deemed an ap-propriation of the point of novelty, or such design when is substantially similar to the patented design’s points of novelty is sufficient to constitute appropriation, while under U.S. practice, a potentially infringing design needed only to incorpo-rate points of novelty that were substantially similar to the patented design’s points of novelty, not the identical points of novelty.19 The Assessment Guidelines also do not clearly indicate whether the accused product needs to appropriate only one or all points of novelty in order to be deemed an infringement, or whether the fea-tures of a design as a whole can be considered as a point of novelty; neither do the courts offer a clear conclusion in this regard. However, it appears that the IPO be-lieves that all points of novelty of the claimed design have to be appropriated by the accused product to be found infringing in view of the above-mentioned legisla-tive reason for adopting partial design.
Please note that the ordinary observer test in the Assessment Guidelines
17
TAIWAN INTELLECTUAL PROPERTY OFFICE,PATENT INFRINGEMENT ASSESSMENT GUIDELINES
56 (2004).
18
Id. at 53.
19
Aaron Cook, Points of Novelty, Lawman Armor, and the Destruction of Design Patents, 12 J. TECH. L. & POL’Y 103, 114 (2007).
seems to be slightly different from that under U.S. practice, which was established in Gorham.20 The Gorham Court set forth the test: “[I]f, in the eye of an ordinary
observer, giving such attention as a purchaser usually gives, two designs are sub-stantially the same, if the resemblance is such as to deceive such an observer, in-ducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” In the Assessment Guidelines, it is “the accused product” (the design embodied in a complete product) and “the claimed design” to be com-pared while under Gorham, it is “the design that embodied in the accused product” and “the claimed design” to be compared. Since under the Act, the claimed design can be embodied in only a portion of the product, the pertinent part of the Assess-ment Guidelines may need to be amended to be consistent with Gorham.
The partial design practice compared to the current practice is advantageous to the patentee in the regards of the “point of novelty test” as well as the “ordinary observer test”. As mentioned above, the Patent Infringement Guidelines are silent about whether an infringer needs to appropriate all or any of the points of novelty of a claimed design to be deemed as infringing. The Patent Infringement Guide-lines should be amended to specifically indicate that the accused product needs to appropriate all points of novelty in order to constitute an infringement. Otherwise, the partial design practice in the Act would not meet the above-mentioned legisla-tive purpose. Accordingly, if an applicant considers that the design of its complete product contains a plurality of points of novelty, separate design patent applications can be filed to cover each of the points of novelty by using the phantom/broken lines to indicate the unclaimed portions. In that case, as long as an accused product appropriates any one of the points of novelty, it may infringe at least one of the de-sign patents. For example, it is our understanding that the U.S. Hoover Company
20
considers that the design of its product, “floor cleaner handle potion”, contains a plurality of points of novelty, and filed separate design applications to cover them (shown in solid lines). The applications are entitled “floor cleaner upper handle potion” and “floor cleaner lower handle potion” and are later issued U.S. Des. Pat. Nos. D469,227 and D469,590 (see below Figure 4). If Hoover intends to seek de-sign patent protection for the same product in Taiwan, under current practice, it has to claim the design of the whole product, and an accused product must appropriate both points of novelty to be deemed an infringement. In contrast, under the Act, the accused product, if appropriating any one of the two points of novelty, may in-fringe one of the two design patents.
US Des. Pat. No. D469,227 US Des. Pat. No. D469,590
Figure 4
In regard to the “ordinary observer test”, even if the design of the entire prod-uct contains only a single point of novelty, the partial design practice has its advan-tages. A patent applicant may limit the impact of prior art on the ordinary observer test by using broken or phantom lines in the design patent. The applicant should draw distinctive portions of the article’s design using solid lines, and represent por-tions of the article that are not considered part of the claimed design with broken
lines.21 Using broken lines can effectively broaden the design patent by excluding unnecessary or extraneous features from the claimed design. For example, it is our understanding that Procter & Gamble Co. obtained a Des. Pat. No. 400,443 (see below Figure 5 at the left) covering a design of an entire bottle and later found that the design resided in the bottom of the bottle should be the point of novelty and thus later filed continuation of applications and obtained Des. Pat. No. 414,419 and Des. Pat. No. 435,216 (see below Figure 5 at the middle and right).22 Under the “ordinary observer test”, Des. Pat. No. 435,216 would be the easiest to infringe since only the bottom of the bottle (shown in solid lines) needs to be compared to the corresponding design of an accused product, while for Des. Pat. No. 414,419, the neck oration must be additionally considered in the comparison to determine whether their visual appearances as a whole are the same or similar to the corre-sponding portions of the accused product. As for Des. Pat. No. 400,443, the neck and the cap both need to be additionally considered and thus would be the most difficult to infringe. If the applicant seeks design patent protection for the same product in Taiwan, under current practice, the applicant can only obtain a design patent similar to Des. Pat. No. 400,443, while under the Act, the applicant may ob-tain a design patent similar to either of the three design patents.
21
James Juo, Rebooting Design Patents and Resurrecting Whitman Saddle, 18 FED. CIR. B.J. 429, 448 (2009).
22
葉雪美，「導致美國開放部份設計專利的 Zahn 案例及其影響」，智慧財產權月刊， 第 85 期，頁 81（2006）。
U.S. Des. Pat. No. D400,443
U.S. Des. Pat. No. D414,419
U.S. Des. Pat. No. D435,216
Figure 5
Despite the advantages mentioned above, applicants should be aware that since the potions covered by phantom/broken lines are not claimed and are not considered visual features of the design, they cannot contribute to patentability of the claimed design over prior art references. In other words, a partial design is ba-sically easier to be found invalid than a design that is embodied in a complete arti-cle of manufacture.
3. DESIGN PATENT UNITY REQUIREMENT
3.1 Current One-Embodiment Practice in Taiwan
Paragraph 1, § 119 stipulates that “when applying for a design patent, an ap-plication shall be filed for each separate new design.” A general design idea may cover several similar embodiments (specific designs) which can thus theoretically be placed in a single design patent application. However, paragraph 5, § 110 further requires that where a person applies for a patent for a new design similar to another new design already filed by the applicant, an associated design patent application shall be filed with respect to the said similar new design. Accordingly, since the embodiments covered by a general design idea should be similar to each other, they
cannot be placed in a single design patent application. The applicant should desig-nate one embodiment as the parent and file associated design patent applications covering the other embodiments. Therefore, under local practice, a single design patent application can only cover one embodiment of a design.
3.2 Patent Reform Act for Unity of Application
Requirements
In the Act, the one-embodiment practice remains unchanged. However, the Act adopts an approach similar to the Japanese Design Act, in which other similar embodiments should be filed in derivative design patent application(s), in contrast to the current practice of associated design applications. The legal protection of the associated design patent is different from that of a derivative design patent.
3.3 United States Practice Regarding Unity of
Application Requirements
The two leading sources for the unity of application requirements are M.P.E.P. § 1504.05 and In re Rubinfield, 270 F.2d 390 (C.C.P.A. 1959). In Rubinfield, the applicant disclosed two similar but different embodiments of floor waxers. The main issue in Rubinfield was whether two different embodiments can be properly illustrated in the same application. The C.C.P.A. court reversed the examiner’s re-jection based on the multiplicity of designs being claimed and held that multiple embodiments of a single inventive concept can be included within the same design application since 35 U.S.C. 171 does preclude multiple embodiments within a de-sign invention.23
According to M.P.E.P. § 1504.05, multiple embodiments are permissible in a single application if they involve a single inventive concept. However, two or more
23
distinctively patentable designs may not be included in the same patent application. The obviousness standard under 35 U.S.C. 103(a) is applied by examiners to de-termine admissibility of multiple embodiments within one application. The em-bodiments are allowable if they are similar in appearance with minor differences or are obvious to a person of ordinary skill in the art. For example, U.S. Des. Pat. No. 346,722 entitled “flatware” involves three embodiments in which the three em-bodiments share the same design (with a knob) that embodies in the handle por-tions (see below Figure 6).24 The head portions of the three embodiments are ob-vious to a person of ordinary skill in the art because they are commonly seen knife, fork and spoon heads.
U.S. Des. Pat. No. 346,722
Figure 6
In practice, in a U.S. design application that contains a plurality of embodi-ments, each of the embodiments can be individually enforced and has its own scope of similarity.25 If multiple embodiments are included within a single 24 葉雪美，「淺談美國設計（新式樣）專利」，智慧財產權月刊，第 73 期，頁 47-48 （2005）。 25 葉雪美，同前註，頁 41。
cation, they should be described and differentiated within the specification. Lack of description may hinder the allowance of multiple embodiments.
4. ASSOCIATED DESIGN PATENT V.
DERIVATIVE DESIGN PATENT
The associated design patent system of the current Patent Law is to be re-pealed by the Act, which adopts the derivative design patent system in its place. The pending derivative design patent is similar to the related design patent under Japanese patent law. We compare current and pending design patent systems as follows:
4.1 Associated Design Patent under the Patent Law
4.1.1 The Nature of an Associated Design
The term “associated new design” as used herein refers to a creation made by a person, which is originated from and similar to an original design of the same person (see Paragraph 2, § 109 of the Patent Law). According to page 57 of the As-sessment Guidelines, the scope of a design patent covers any design that is the same or similar to the design shown in the design patent.26 Therefore, if two de-signs are similar, their patent rights overlap.27 On the basis of the above, the asso-ciated design patent system seems to solve the double patenting problem in design
26
The same design means that both the visuals features of the two designs and the articles that embody the designs are the same, and similar design means that (i) the visual features of the two designs are similar and the articles that embody the designs are similar; (ii) the vis-ual features of the two designs are the same and the articles that embody the designs are similar; or (iii) the visual features of the two designs are similar and the articles that em-body the designs are the same; 葉雪美，同前註。
27
黃文儀，「新式樣近似判斷之相關理論」，2001 全國科技法律研討會論文集，頁 14-23（2001）。
patents. It is well understood that double patenting is prohibited to prevent the same applicant from prolonging the term of the same exclusive patent right from of an earlier filed patent application. Under U.S. practice, there are two types of dou-ble patenting: same-invention type doudou-ble patenting under § 171 of the U.S. patent law, and non-statutory type double patenting,28 also known as obvious-type double patenting. For non-statutory type double patenting, the applicant can file a terminal disclaimer to relinquish the right for the second patent upon conclusion of the term of the first patent so that the same exclusive right will not be inappropriately pro-longed.29 As to same-invention type double patenting, the applicant can only can-cel the application for the second patent to overcome the rejection. The term of an associated design patent, however, expires when its original design patent expires (see below Figure 7, and Paragraph 3, § 113). Accordingly, the associated design patent system seems to resolve a problem similar to the above U.S. non-statutory type double patenting problem.
Figure 7
Paragraph 5, § 110 of the Patent Law stipulates: “where a person applies for a patent for a new design similar to another new design already filed by him/her, an associated design patent application shall be filed with respect to the said similar
28
UNITED STATES PATENT AND TRADEMARK OFFICE, THE US MANUAL OF PATENT EXAMINING
PROCEDURE 2001 § 1504.06 (2001).
29 Id.
Expire at the same date Less than 12 years
12 years Filing date of the original design application
new design without being subject to the restrictions set out in Paragraph 1 (novelty requirement) and in Paragraph 4 (creativeness requirement) of this Article.” Thus, a “similar” design, but not a “same” design should be filed as an associated design patent application. If the designs in two applications owned by the same person are exactly the same (“same design” filing results from accidentally filed duplicate fil-ings), the later-filed application will be rejected by the IPO or must be cancelled by the applicant. Moreover, the later-filed application cannot be saved by filing an as-sociated design patent application. If two same design patent applications are filed on the same date, the applicant will be required to choose one; otherwise, both will be rejected. This situation is similar to the same-invention type double patenting rejection under U.S. practice in which filing of a terminal disclaimer cannot save the later application.
4.1.2 Under Current Patent Law, How to Do Deal with a
Taiwan Design Patent Filed with Priority Documents
Containing Multiple Embodiments
If a priority document (such as a U.S. priority document) contains multiple embodiments, to meet the one-embodiment requirement under the Patent Law, the applicant for the corresponding R.O.C. (Taiwan) patent applications needs to de-cide whether (i) to file one embodiment as the parent application and the rest as the parent’s associated design patent applications,30 or (ii) to file separate independent design patent applications for each embodiment. In the former case, the scope of patent right is restricted because the associated design patents do not have their own independent scopes; while in the latter case the collective scope of patent right
30
Since the applicant includes the multiple embodiments in the priority document, they should be similar designs. However, the similarity of embodiments in the priority document may vary by case, and so it is still possible that they are considered as patentably distinctive from each other in Taiwan.
is broader because each design patent has its own scope of similarity（近似範 圍）. However, in the latter case, if the embodiments are considered similar, the examiner will require them to be arranged as in the former case, and additional cost will be incurred. Alternatively, the applicant may choose to initially submit the multiple embodiments within a single design patent application and wait until re-ceiving an office action to respond (i.e. (i) designate one embodiment as the parent and file divisional applications covering the rest or (ii) choose one as the parent and convert the rest to associated design patent applications of the parent). There have even been cases in which the examiner first asked the applicant to file divisional applications for each embodiment, but in the next office action asked the applicant to arrange them as one parent and multiple associated design patent applications, incurring even greater cost. Applicants are therefore advised to file separate design patent applications at the outset, thereby covering a broader scope of inclusive rights, if allowed; and if rejected, they can still be arranged as parent and associated design patent(s) at a later stage.
4.1.3 Definition of the Term “Similar” in Paragraph 2, Article
109 of the Patent Law
The term “similar” is repeatedly mentioned in the Patent Law, the Enforce-ment Rules of the Patent Law and the Guidelines. It is understood that the meaning of “similar” is different in novelty analysis than in analysis of creativeness/non-obviousness. A design is devoid of novelty if the design is the same or similar to the prior art reference such that an “ordinary observer” will confuse the two and mistake one for the other,31 while a design is devoid of creativeness if a “person skilled in the art” can easily conceive the claimed design in view of a single prior
31
art reference or a combination of prior art references.32 Since the associated design patent system functions to avoid the double patenting problem, the design in the original design patent should be “patentably” indistinguishable from that in the as-sociated design patent(s). A design is not patentable if it is devoid of novelty or devoid of creativeness. The standards for determining novelty of a design are dif-ferent from those for creativeness, and the degree of similarity in novelty analysis is stricter than that in creativeness analysis. Accordingly, when defining associated design patent as in Paragraph 2, § 109 of the Patent Law, the term “similar” should be understood as adopting the standard applied to creativeness analysis.
4.1.4 An Associated Design Patent Depends from Its
Original Design Patent
An associated new design patent right shall not be claimed separately, nor shall its effect be extended to the scope of similarity (see Paragraph 1, § 124). The patent right of an associated new design shall be revoked or extinguished concur-rently with the revocation or extinguishment of the patent right of the original new design (see Paragraph 2, § 124). An associated new design shall not be independ-ently subject to assignment, trust, licensing or pledge creation (see § 126). Accord-ingly, an associated design patent depends from an original design patent, and does not have its own scope of similarity33 (see below Figure 8). Under local practice, an associated design patent is often cited to substantiate or answer a challenge to the scope of its original design patent.34 That is, if, prima facie, it is unclear whether an accused design is similar to the original design patent but it is clear that
32
See para 4, § 110 of the Patent Law.
33
顏吉承，「聯合新式樣制度與新式樣之近似概念（上）」，智慧財產權月刊，第 86 期 ， 頁 99-128 （ 2006 ） ； 顏 吉 承 ， 「 聯 合 新 式 樣 制 度 與 新 式 樣 之 近 似 概 念 （下）」，智慧財產權月刊，第 87 期，頁 68-84（2006）。
34
the accused design is similar to an associated design patent of the original design patent, it will be concluded that the accused design is also similar to the original design patent.
Original design patent Associated design patent Scope of similarity
Figure 8
The patent right of an associated new design patent is subordinate to the ent right of the original design patent (Paragraph 1, § 124). In other words, the pat-ent right of an associated design patpat-ent cannot be independpat-ently enforced; it must be enforced simultaneously with the original design patent. According to Paragraph 5, § 110 of the Patent Law, if, prior to the filing of the original design patent appli-cation, another new design identical with or similar to such associated new design has been published, or put to public use, or has become known to the public, no associated design patent may be applied for or granted. Accordingly, it is possible that a prior art reference published prior to the filing of the original design patent application is similar to the original design but not similar to the associated design, and such a prior art reference would not directly bar an associate design patent ap-plication from being granted a patent right (see below Figure 9). However, such prior art reference can be used to negate the patentability of the original design pat-ent application; since the associated design application depends from the original design patent application, once the original design patent application is rejected, the associated design patent application still cannot be granted a patent right.
Prior art reference Original design patent Associated design patent Scope of similarity
Figure 9
Where a design is similar to one disclosed in an associated design patent ap-plication filed by the same applicant, the applicant shall not file an associated new design for the said new design (see Paragraph 6, § 110). The rationale of the aforementioned provision may be that since an associated design patent may be cited to substantiate its original design patent, if the original design patent is an associated design patent, there will be no scope of similarity to substantiate. An-other possible rationale is to avoid unreasonable extension of the original design patent’s scope of similarity. For example, it is possible that design B is similar to designs A and C, but designs A and C are not similar to each other. If design B is an associated design of design A, then allowing design C to be filed as an associated design of design B would be unreasonable because it would incorrectly imply that design C is also similar to design A.
4.2 Derivative Design Patent under the Act
4.2.1 The Nature of a Derivative Design Patent
According to § 129 of the Act, for two or more similar designs owned by the same person, a design patent application can be filed to cover one of the designs and derivative design patent application(s) can be filed to cover the rest. Although the associated design patent system is eliminated in the Act, the one-embodiment requirement remains in light of the aforementioned provision. The added derivative
design patent system is similar to the related design patent system of the Japanese Design Act.35 Since the original design is similar to the derivative design, the ex-clusive patent rights overlap. Similar to the relevant requirement for associated de-sign patents in the Patent Law, to avoid prolongation of the earlier filed original design patent right, the patent right of the derivative design patent expires when the original design patent expires.36
The filing date of a derivative design patent application cannot be earlier than that of the original design patent application. A derivative design patent application cannot be filed after issuance of the original patent application.37 In other words, a derivative design patent application shall be filed while the original patent applica-tion is pending. A design patent applicaapplica-tion can be converted into a derivative de-sign patent application and vice versa. The filing date of the converted patent ap-plication is the same as that of the design apap-plication before the conversion.38
4.2.2 A Derivative Design Patent Is Independent from Its
Original Design Patent
According to § 139 of the Act, the patent right of a derivative design patent can be enforced independent from other related design patents, and the derivative design patent has its own scope of similarity (see below Figure 10). Where the scopes of similarity of the parent design patent and the derivative design patent
35
See § 10 of the Japanese Design Act: “Notwithstanding § 9(1) or (2), an applicant for de-sign registration may obtain dede-sign registration of a dede-sign that is similar to another dede-sign selected from the applicant’s own designs either for which an application for design regis-tration has been filed or for which design regisregis-tration has been granted (hereinafter the se-lected design is referred to as the “Principal Design” and a design similar to it is referred to as a “Related Design”) …”.
36
Id. § 137.
37
An associated design patent is not so required.
38
overlap should be the core design concept that they share. Accordingly, a derivative design patent is independent from, yet expires on the same date as, its original de-sign patent. The same person cannot file a derivative dede-sign patent application in which the design is similar to that in another related design patent application but dissimilar to that in the original design patent application (Paragraph 4, § 129 of the Act). The rationale of the aforementioned provision is similar to that for an as-sociated design patent: to avoid unreasonably extending the original design patent’s scope of similarity.
Original design patent Derivative design patent Scope of similarity
Figure 10
4.2.3 Under the Act, How to Deal with a Taiwan Design
Patent Filing with Priority Documents Containing
Multiple Embodiments
Under the Act, to meet the one-embodiment requirement, if a priority docu-ment such as a U.S. priority docudocu-ment, contains multiple embodidocu-ments, the appli-cant for the corresponding R.O.C. (Taiwan) patent applications needs to decide whether to file one embodiment as the parent and the rest as derivative design pat-ent applications of the parpat-ent, or to file separate independpat-ent design patpat-ent applica-tions for each embodiment at the beginning. Alternatively, the applicant can wait until receiving an office action to respond (i.e. to designate one embodiment as the parent and file divisional applications covering the rest or to choose one as the par-ent and convert the rest to derivative design patpar-ent applications of the parpar-ent).
Al-though such decisions should be made on a case-by-case base, it is generally advis-able to first file a parent and derivative design patent application(s) unless meeting the six-month priority claim requirement is important and there is insufficient time to arrange such derivative design patent applications. Since a derivative design, like a regular design, has its own scope of similarity, there is no advantage in ini-tially filing separate regular design patent applications for each embodiment. The terms of the separately filed design patent applications will be the same as those of the parent and the derivative design applications. Furthermore, if the applicant chooses to file separate regular design patent applications, the examiner may issue an office action, responding to which would create another cost, requiring one sign patent application to be designated as the parent and the rest converted to de-rivative design patent applications if the examiner considers the designs not pat-entably distinctive.
4.2.4 The Influence of the Derivative Design Practice
The monetary benefits of a patent portfolio include a market monopoly posi-tion for the portfolio holder and revenue from licensing the intellectual property. Non monetary benefits include strategic advantages like first-mover advantages and defense against rival portfolio holders. It is well-known that divisional applica-tions for invention patents can be used to build up a patent portfolio surrounding a core technology. For a core design concept covered in a design application, under current practice, it would be difficult to build a patent portfolio surrounding the core design concept because similar designs should be filed as associate design applications, which is dependent from the parent application and cannot be en-forced independently. However, under the Act, similar designs can be filed in de-rivative design applications, which, when issued, the dede-rivative design patents have their own independent scopes. That is, an applicant can take advantage of the
de-rivative design patent system under the Act to build up a patent portfolio surround-ing a core design concept (where the scopes of similarity of these designs overlap). In that case, an accused product may infringe a set of design patents (a parent de-sign patent and/or several derivative dede-sign patents) at the same time and it would be a substantial time and momentary burden for the accused infringer to defend infringement accusations based on a plurality of design patents.
5. COMPARISON OF ASSOCIATED AND
DERIVATIVE DESIGN PATENTS
The following Table 1 offers a summary comparison of the requirements of, and the rights conferred by, an associated design patent in the Patent Law and a derivative design patent in the Act:
Table 1
Associated design patent in
the Patent Law
Derivative design patent in the Act
Has to be similar to the parent YES YES
Has its own scope of similarity NO YES
Expires when the parent expires YES YES
Must be enforced together with the parent YES NO
Has its own patent certificate NO YES
Must be filed when the parent is pending NO YES Can be converted into a regular design patent
application
YES YES Extinguished when the parent is extinguished
(e.g. abandoned, invalidated), other than by expi-ration
6. CONCLUSION
The adoption of the partial design and derivative design systems in the Act would provide many advantages to design patent owners compared to the current system under the currently enforced Patent Law. Applicants should understand and avail themselves of the new mechanisms to best protect their design patent rights in Taiwan. The newly introduced partial design system allows applicants to claim the design of only a portion of a product. Thus, an accused product may infringe a de-sign patent simply because the accused product appropriates the partial/regional design shown in the drawings of the design patent. In contrast, under the current complete-product design patent practice, an infringer needs to appropriate the en-tire design of the product to be found to be infringing. It is expected that the partial design system will entice foreign applicants to file design patent applications in Taiwan. In addition, unlike the U.S. or Chinese design patent system,39 under the Act, it is unallowable to include a plurality of similar designs in a single design patent application. Instead, similar designs should be included in a parent design patent application and several derivative design patent applications. A derivative design patent has an independent patent scope and can be independently enforced, which is more advantageous than its predecessor, an associated design patent. In particular, a company can utilize the derivative design patent system to establish a design patent portfolio to encompass a core design concept. Furthermore, as ex-plained above, once the derivative design patent system is adopted, if an applicant plans to file Taiwan design patent application(s) with priority document(s)
39
See para. 1 of Rule 35 of the Implementing Regulations of the Chinese Patent Law: “Where two or more similar designs of the same product are filed in one application in accordance with the provisions of § 31, paragraph two of the Patent Law, the other designs of the prod-uct shall be similar to the main design indicated in the brief explanation. The number of similar designs contained in an application for patent for design shall not exceed 10”.
ing multiple embodiments, it is generally advisable to arrange a parent and deriva-tive design patent application filings, instead of including all the embodiments in a single design application as in the priority document(s).
List of Figures/Tables
Figure 1 Example of current practice for priority document containing detachable components shown in broken lines
Figure 2 Example of current practice for priority document containing non-detachable components shown in broken lines
Figure 3 Front view of U.S. Des. Pat. No. 257,511
Figure 4 Perspective views of U.S. Des. Pat. Nos. D469,227 and D469,590 Figure 5 Front views of U.S. Des. Pat. Nos. D400,443, D414,419 and D435,
216
Figure 6 Perspective view of U.S. Des. Pat. No. 346,722
Figure 7 Illustration of the relationship between the terms of an original design patent and an associated design patent
Figure 8 Illustration of an associated patent dependent from an original design patent
Figure 9 Illustration of the relationships among a prior art reference, an original design patent and an associated design patent
Figure 10 Illustration of an associated patent independent from an original design patent
Table 1 Comparison between an associated design patent and a derivative design patent
參考文獻
中文期刊
沈洳瑩，〈我國專利法修正中設計專利與設計產業現況之調和〉，《科技法律透析》， 第 21 卷第 8 期，頁 27-30，2009 年 8 月。（Shen, Ju-Ying, The Harmonization of the Design Patent in Patent Reform Act and the Current Industrial Design Practice, Science and Technology Law Review, vol. 21, no. 8, at 27-30, Aug. 2009.）
葉雪美，〈淺談美國設計（新式樣）專利〉，《智慧財產權月刊》，第 73 期，頁 31-68，2005 年 1 月。（Yeh, Hsueh-Mei, Introduction to the US Design Patent System, In-tellectual Property Right Journal, no. 73, at 31-68, Jan. 2005.）
葉雪美，〈導致美國開放部份設計專利的 Zahn 案例及其影響〉，《智慧財產權月刊》， 第 85 期，頁 57-96，2006 年 1 月。（Yeh, Hsueh-Mei, The Zahn Case that Begins the US Partial Design Practice and Its Influence, Intellectual Property Right Journal, no. 85, at 57-96, Jan. 2006.）
顏吉承，〈聯合新式樣制度與新式樣之近似概念（上）〉，《智慧財產權月刊》，第 86 期，頁 99-128，2006 年 2 月。（Yen, Chi-Cheng, The Associated Design System and the Similarity Concept of a Design (Part I), Intellectual Property Right Journal, no. 86, at 99-128, Feb. 2006.）
顏吉承，〈聯合新式樣制度與新式樣之近似概念（下）〉，《智慧財產權月刊》，第 87 期，頁 68-84，2006 年 3 月。(Yen, Chi-Cheng, The Associated Design System and the Similarity Concept of a Design (PartⅡ), Intellectual Property Right Journal, no. 87, at 68-84, Mar. 2006.）
中文論文集
黃文儀，〈新式樣近似判斷之相關理論〉，收於《2001 年全國科技法律研討會論文 集》，頁 19-29，國立交通大學出版，新竹（2001）。（Huang, Wen-Yi, The Rele-vant Theories of Determining the Scope of Similarity of a Design, National Science and Technology Law Symposium Proceedings, at 19-29, National Chiao Tung University, Hsinchu (2001).）
英文書籍
TAIWAN INTELLECTUAL PROPERTY OFFICE, PATENT INFRINGEMENT ASSESSMENT GUIDELINES
(2004).
UNITED STATES PATENT AND TRADEMARK OFFICE, THE US MANUAL OF PATENT EXAMINING
PROCEDURE 2001 (2001).
英文期刊
Cook, Aaron, Points of Novelty, Lawman Armor, and the Destruction of Design Patents, 12 J. TECH. L. & POL’Y 103(2007).
Juo, James, Rebooting Design Patents and Resurrecting Whitman Saddle, 18 FED. CIR. B.J. 429 (2009).
